Patent Trial & Appeal Board

Subscribe to Patent Trial & Appeal Board

APA Safeguards Rebuttal Opportunity to New Claim Construction

A fundamental safeguard of the Administrative Procedure Act (APA) is the opportunity to be heard and to present evidence. Over the years the Federal Circuit has reminded the PTAB that parties must have notice of the agency’s positions and a meaningful opportunity to rebut such positions. The same opportunity must be provided for positions of opposing parties — as long as such positions are deemed timely.

Since the SCOTUS decision in SAS institute, which explained that the petition serves to “guide the life of the litigation,” the Board has considered positions expressed in a petition to be fixed. That is, if a patent owner raises a new claim construction mid-trial, the petitioner may not stray from its original positions (typically addressing a different construction) to rebut the new position of the patent owner. As can be appreciated there is a clear tension between the due process guarantees of the APA and a rigid application of the SCOTUS explanation in SAS.

Yesterday, the CAFC issued a precedential decision to clarify that there is at least some wiggle room for petitioners.Continue Reading CAFC Clarifies PTAB Trial Scope – Coming Practice Changes

images_content_BRI-PTAB-1-275x188

Critical U.S Industry Depends on the PTAB – Not China

The so-called PREVAIL Act (here) was floated some weeks back to “to ensure the United States does not cede technological supremacy to our foreign competitors and adversaries.” As the accompanying materials insist, fighting China is the rationale behind the bill’s proposed patent reforms. That is, the U.S. Patent system must be made stronger to rival the Chinese threat by weakening the USPTO’s Patent Trial & Appeal Board (PTAB).

If this “stronger patents” argument sounds familiar, it should. Before its reinvention as the Prevail Act, the same “litigation first” ideas were packaged to the American public as the so-called Stronger Patents Act. But, the “Stronger” Bill went absolutely nowhere despite being introduced every year for the past six years (maybe 7, I lost count).

Not surprisingly, increasing patent litigation expense and unnecessary liability for successful U.S companies in the name of “stronger patents” didn’t resonate on the Hill. This is because the America Invents Act (AIA), which created PTAB trial was passed into law a little more than a decade ago for the purpose of reducing wasteful litigation over improvidently issued patents— and is working exactly as intended. Few legislators (aside from sponsors) were interested in a proposal to effectively repeal the AIA. So, after years of failure, this perennially failed effort has been newly-minted as the PREVAIL Act.

While the new spin also argues for stronger patents, it presents the need as a necessary tool to “prevail” against the growing technological threat from communist China. Ironically, the blatant dishonesty of this new spin only serves to highlight the critical importance of the PTAB to U.S. interests.Continue Reading The Prevail Act – Harm U.S. Industry to Fight China?

images_content_2014_PTAB_at_4-1-275x206

No Role For POP Post-Arthrex

As of Monday July 24th, the USPTO has discontinued the use of its Precedential-Opinion-Panel (POP) in favor of the interim Director Review (DR). This move was not unexpected as the POP panel (an early attempt to cure the Arthrex infirmity with partial Director oversight) was effectively replaced by the SCOTUS decision in Arthrex (Director Only).

In relying only on the DR moving forward, the PTAB has also decided to expand it to AIA institution decisions.Continue Reading PTAB Drops POP Panel Review Option

images_content_PTAB-1

Boardside Chat Thursday 7/20

The PTAB’s next Boardside Chat webinar will be held this Thursday, July 20, from noon to 1 p.m. ET. The panel of APJs will discuss issues that typically arise during an America Invents Act (AIA) trial proceeding before the PTAB. The scheduled topics include filing of multiple petitions, discretionary denial, new…

images_content_2014_p3-uspto-1-275x197

Empirical Studies Refute Oft Repeated Fallacies

The PTAB released two studies on historical petition filing practices this month. One directed to the frequency of so-called serial/parallel petition filings, and the other pertaining to Orange Book/Biologics patents. As with the agency’s earlier studies on these same topics (2021), the refreshed data again demonstrates that Orange Book patents are very rarely subject to AIA trial proceedings, and that abusive, serial petition filings have been effectively outlawed for years now.

Of course anyone that actually practices before the PTAB is well-aware of these realities. So, these empirical studies are primarily directed to the oft repeated criticisms of moneyed lobbyists and disingenuous critics at a time when both Congress and the agency grapple with wildly conflicting narratives.Continue Reading PTAB Data Belies Outdated Criticisms

Preliminary Guidance More Hinderance Than Help

Patent Owner’s rarely seek to amend claims during PTAB trials. This is because, as most such patents are being simultaneously litigated, amendment introduces a host of complications — not the least of which is creating an intervening rights defense for the patent challenger. This is why amendments are historically seen in about 5-7% of PTAB trials.

For the rare Patent Owner that is inclined to amend, the PTAB offers an Amendment Pilot Program. The Pilot is designed to help Patent Owner refine their amendment positions with two opportunities to amend (non-pilot route permits one amendment submission). Under the Pilot, the Patent Owner can also request the panel’s preliminary assessment (i.e., Preliminary Guidance) of its initial amendment to assist in refining the final amendment submission.

But, practically speaking, Preliminary Guidance is a significant gamble for Patent Owners that is rarely worth taking. And as the Federal Circuit pointed out earlier this week, even when seemingly helpful, it may still prove ultimately unhelpful.Continue Reading PTAB Amendment Pilot – Guidance or Hinderance?

PTAB-legislation

Estoppel Reasonably Could Have Raised During Trial?

The challenge to the IPR estoppel statute in Apple et al., v. California Institute of Technology focused on the statute’s use of “during.” That is, whether “reasonably could have raised” is assessed at the time the petition is drafted, or, during the actual proceeding as stated in the statute.

While the Court passed on the question today, its reasoning could be in conflict with contrary Federal Circuit precedent.Continue Reading SCOTUS Passes on Scope of IPR Estoppel – Joinder Scope Remains Uncertain

images_content_ADR-1-275x284

Failed PTAB Bill Reemerges For a 6th Time

Yesterday, U.S. Senators Chris Coons (D-Del.),Thom Tillis(R-N.C.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Hawaii) introduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act (here). Also yesterday, some of the very same senators introduced the Patent Eligibility Restoration Act of 2023. 

The co-introduction of these bills suggests a plan to drive compromise on patent eligibility.Continue Reading New PTAB Bill to Drive 101 Compromise?

images_content_2014_101-1-275x212

Bill to Reset Analysis

Today, U.S. Senators Thom Tillis (R-NC) and Chris Coons (D-DE) introduced the Patent Eligibility Restoration Act of 2023. You can find the text of the bill (here).

The bill is a slightly refined version of the proposal floated last summer. Most of the changes seem directed to assessing the relevance of a mathematical formula as part of the claim, and making clear that otherwise patent ineligible subject matter cannot be saved by mere computer implementation. Presumably these changes are directed to addressing the concerns of those stakeholders in the predictable arts. (The lobbying force behind the effort has always been Bio/Pharma).

The bill essentially wipes the slate clean on 101 jurisprudence by eliminating all so-called “judicial exceptions.” As well it should. Despite those that would counsel otherwise, there is absolutely no rhyme or reason to the food-fight mess that is 101 jurisprudence.Continue Reading New 101 Bill to Avoid Case Law Morass

images_missed_target-2

The ANPRM Proposals That Should Drop Out of the Process

Yesterday I highlighted the ANPRM proposals that are likely to make it into the NPRM this coming fall. Today, I’ll walk through the ones that I expect to be dropped, or at least heavily revised.

The vast majority of these “misfires” suffer from the same fatal deficiency — only Congress can provide for such modifications to the AIA. While the agency has substantive rule-making authority to implement the AIA, it does not have authority to implement regulations that effectively rewrite the AIA statutes themselves.

Given the push back from Congress on the apparent overreach of many of the ANPRM proposals, it is highly unlikely that the agency will carry such proposals forward to the NPRM. Continue Reading PTAB ANPRM – Misfires & Overextensions